Jackrel v. Paragon Sporting Goods

171 F. Supp. 2d 163, 2001 U.S. Dist. LEXIS 5214, 2001 WL 423042
CourtDistrict Court, S.D. New York
DecidedApril 24, 2001
Docket99 CIV 10609 (NRB)
StatusPublished

This text of 171 F. Supp. 2d 163 (Jackrel v. Paragon Sporting Goods) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Jackrel v. Paragon Sporting Goods, 171 F. Supp. 2d 163, 2001 U.S. Dist. LEXIS 5214, 2001 WL 423042 (S.D.N.Y. 2001).

Opinion

MEMORANDUM AND ORDER

BUCHWALD, District Judge.

Plaintiff Donald Jackrel brings this action against the defendants Paragon Sporting Goods (“Paragon”), and Fabry Saranac *164 Glove Co. (“Fabry”) for patent infringement pursuant to 35 U.S.C. §§ 271 and 281-85. Currently before the Court are the parties cross-motions for summary judgment. Defendant Fabry seeks a declaratory judgment of non-infringement and/or invalidity while plaintiff seeks a declaration of infringement. For the reasons that follow, plaintiffs motion is denied and defendant’s motion for a declaration of non-infringement and for summary judgment is granted. 1

BACKGROUND

Plaintiff is the owner of U.S. Patent No. 4,520,056 entitled “Gas Permeable — Liquid Impermeable Membrane Confined Within A Recess,” Defs.’ Ex. 1 (“the ’056 patent”) and U.S. Patent No. 4,545,841 entitled “Method for Fabricating a Glove With An Intermediate Membrane Layer,” Defs.’ Ex. 2 (“the ’841 patent”). Both patents relate to the creation of three-layer gloves (“Insert Gloves”) that are designed to be waterproof, yet breathable, permitting moisture from the body to escape the glove while preventing water from outside from entering the gloves and reaching the wearer. Plaintiff alleges that the defendants manufactured and sold winter gloves that infringe the ’056 and ’841 patents.

Plaintiff commenced this action on October 18, 1999 against Paragon, a New York corporation that sells sporting equipment, including the gloves alleged to infringe the ’056 and ’841 Patents, in New York. Plaintiff then filed an amended complaint on February 24, 2000, adding defendants Fabry, Gates-Mills Inc. (“Gates”), Gordini U.S.A. (“Gordini”) and Wells Lamont (‘Wells”), corporations that manufacture the allegedly infringing insert gloves sold by Paragon.

Defendants Gates, Gordini and Wells have entered stipulations of settlement with the plaintiff and are no longer parties to this action. Likewise, defendant Paragon has entered into a stipulation with plaintiff not to appear further in this action but agreeing to be bound by the results reached herein. In addition, defendant Paragon fried cross-claims against the manufacturers for indemnification and for breach of warranty of title and breach of warrantee against infringement in violation of New York law. Def. Paragon’s Answer to Am. Compl., Contercls. & Cross-cls., ¶¶ 36-40. Defendant Fabry filed an answer and counter-claim seeking a declaration of invalidity, unenforeeability and/or non-infringement. Def. Fabry’s Answer to Am. Compl. & Countercls., ¶¶ 36-41.

Both the ’841 and ’056 patents derive from the same application. Accordingly, both patents share identical written descriptions and diagrams, and vary only in their claims. For purposes of the parties’ cross-motions for summary judgment, the relevant claims are claims one and four of the ’841 patent and claim one the ’056 patent. Defendants have conceded most elements of the claims at issue (e.g. that its gloves are constructed of three layers, that the intermediate layer is of a waterproof, breathable material, etc.) for purposes of these motions, leaving only the underlined limitations of these claims in dispute.

Claim 1 of the ’841 patent provides:

1. A method for fabricating an article of clothing of the type adapted to surround a portion of the body of the wearer, comprising the steps of: forming an inner layer in the general given shape and size of the body portion; forming an outer layer having substantially said given shape and being slightly larger than said given size; forming an intermediate *165 layer of gas permeable, liquid impermeable material, said intermediate layer being substantially said given shape and being of a size necessary to fit between said inner and outer layers; inserting said intermediate layer into the outer layer; inserting said inner layer into the outer layer so as to sandwich the intermediate layer there between; and joining the inner and outer layers without interrupting the integrity of the body of the intermediate layer, or bonding same to said intermediate layer.

(emphasis added).

Similarly, Claim 4 of the ’841 patent provides:

4. A method for the fabrication of a waterproof, breathable hand covering comprising the steps of: forming an outer glove layer of a flexible, protective material; forming an intermediate glove layer of a thin waterproof and breathable sheet plastic; forming an inner glove layer; telescoping said glove layer one into the other to provide a hand covering-having three layers; joining said outer and inner glove layers together along their peripheral wrist portions, to thereby permit the body of said intermediate glove layer to remain entirely free and [] unattached between said outer layers.

Finally, claim one of the ’056 patent provides:

1. An article of clothing designed to surround a portion of the body comprising an outer layer, an intermediate layer, and an inner layer, said inner layer being situated within said outer layer, means for joining said inner and outer layers to define a recess within which said intermediate layer is confined, without interrupting the integrity of the intermediate layer or bonding same to either of said inner or outer layers, said intermediate layer comprising first and second gas permeable liquid impermeable membranes sealed to form an insert having the general shape of the portion of the body which the article is designed to surround.

In arguing that its products do not infringe plaintiffs patents, Fabry admits that it makes a number of three layer insert gloves that contain an intermediate waterproof breathable layer. Def.’s 56.1 Statement, ¶ 1, Def.’s Exs. A-E, Declaration of Donna Walenski, Senior Vice President of Imports for Fabry, (“Walenski Aff.”), ¶ 3. Defendant argues, however, that its gloves do not infringe plaintiffs patents because the underlined claim limitations require an intermediate layer that remains unattached from the other two layers, while defendant’s gloves do not possess such a free-standing, unattached and/or unbonded intermediate layer as required by plaintiffs patent claims, and thus lack this element. Memorandum in Support of Defendant Fabry’s Motion For Summary Judgment (“Def.’s Mem.”), pp. 2-3.

Since at least as early as the late 1980s, the intermediate layers of Fabry’s gloves have been attached to one or more of the other layers of its gloves. Walenski Aff., ¶ 4. Initially, the intermediate layer was stitched to the other two layers at the wrist to prevent the intermediate layer from slipping and bunching up within the glove. Id., ¶ 5. This initial attachment process was soon deemed insufficient because the fingers of the inner and/or intermediate layers would pull out when a perspiring wearer tried to take the gloves off. Id., ¶ 6. To prevent these layers of the glove from turning inside-out, at least three fingers of the middle layers have been stitched to the inner and outer layers. Id., ¶ 7.

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171 F. Supp. 2d 163, 2001 U.S. Dist. LEXIS 5214, 2001 WL 423042, Counsel Stack Legal Research, https://law.counselstack.com/opinion/jackrel-v-paragon-sporting-goods-nysd-2001.